The details of the SAWS program were kept secret until revealed pursuant to a Freedom of Information Act request by attorneys at a US intellectual property law firm. The attorneys became aware of the program when a patent examiner let slip a reference to it.

The attorneys said that the intent of the program appeared to be to help the Patent Office avoid embarrassment. The revelation of the existence of the program led to considerable discussion in the patent community.

The Patent Office denied that the SAWS program was actually “secret,” although neither patent applicants nor patent attorneys were informed when their applications were assigned to the program.

Concerns about the impact of the program were muted somewhat when the USPTO disclosed that only .04% of all patent applications were routed to the SAWS program.

The public exposure led the USPTO to review the program and it recently posted the following notice on its website, “Upon careful consideration, the USPTO has concluded that the SAWS program has only been marginally utilized and provides minimal benefit.”

Any patent applications previously assigned to the SAWS program will now be put on the regular track.

Patent Commissioner Margaret Focarino said that any future similar “quality-enhancing” initiatives would be “disclosed to the public before implementation.”

We’re glad that the Patent Office made this sensible decision. Secret programs, or even somewhat secret programs, are inconsistent with government transparency and public accountability and are clearly inappropriate when it comes to protecting intellectual property rights.

Adam L. K. Philipp has been involved in the prosecution of patent applications in the computer science, electrical devices, consumer products and related fields since 1998 and with Internet and technology related law since 1995. He also counsels clients on intellectual property portfolio strategies and infringement matters.

It sounds like a mad scientist’s paranoid delusion, but it’s actually true: the US government has long had a (previously) secret system for delaying the approval of “controversial or inconvenient” patents.

The program is called the Sensitive Application Warning System (SAWS) and it’s detailed in a 50-page document requested by a US law firm under the Freedom of Information Act. The papers obtained may be viewed HERE.

Patent Purgatory

Ordinarily, when a patent application is submitted to the USPTO it takes two-and-a-half years to issue. However, patent applications on the SAWS track are placed in “patent purgatory” and must be approved by up to eight people at the Patent Office. This can delay applications for years.

Applicants aren’t notified if their patents are in the SAWS track, and the USPTO hasn’t yet revealed which patents are in the SAWS system.

The patent attorney who filed the Freedom of Information request found out about SAWS when he submitted an application for a “mundane” invention by a startup that was being sued by a large company in the same market. His client paid extra to have the application fast-tracked.

Instead, when the attorney and his client met with the patent examiner, the examiner said that “special approvals” would delay the application and then allegedly said “That’s secret, I’m not supposed to say it.”

The SAWS program isn’t mentioned in the 1,500 page Patent Office manual of examination procedures.

Some of the criteria for slow-tracking seem to have political implications. Examples of subject matter “generating excessive media coverage” include:

AIDS/HIV vaccines and/or methods of prevention

Human fetal cell-based inventions

Tobacco plants engineered for increased nicotine production

Treatments to increase intelligence

Patent examiners are advised to be “liberal” in assigning patent applications to SAWS.

Rare and Expensive

Rather surprisingly, given the breadth of the criteria for assigning applications to SAWS, only about one out of 2500 patent applications is entered into the SAWS program. The number of applications in the SAWS program in any given month is about 500 – about 0.04% of the total pending applications.

Patent applications filed in 2006 and routed to the SAWS track have taken longer to reach a final resolution. 98% of all applications filed in 2006 have reached a final disposition, compared to only 72% of SAWS applications.

According to Todd Elmer, the Chief Communications Officer for the Patent Office, the SAWS program is not intended to delay patent applications:

By bringing an additional quality assurance check to a very small number of pending patent applications, the quality assurance program ensures that those applications that could potentially be of strong public interest are properly issued or properly denied…. Every patent application the USPTO receives is held to the same standard, and there is no reason to inform any particular applicant which quality assurance checks may have been used in any particular review.

The USPTO only recently updated its website to include information about SAWS program. Detailed statistics can be seen here.

As can be seen from the released statistics, the average time for a SAWS patent to be issued is six years, as compared to 3.5 years for all patent applications filed in 2006. This can be very troubling for technology companies as patents often play a key role in their business strategies and a delay in issuing a patent can have serious business consequences. Furthermore, since 1995, patent term has been calculated from the date the patent application was filed instead of when it issued. A delay in issuance will shorten the life of the patent. And while the USPTO has insisted that there is minimal impact from the SAWS program, it is not clear if any of that unnecessary delay can be recouped by the patentee by having their patent term increased.

Patents on the SAWS track also cost more to prosecute. SAWS patents filed in 2006 have an average of 4.3 office actions each, compared with 2.3 office actions per patent for all applications. The result is that prosecuting a SAWS patent costs about twice as much as prosecuting other patents – an estimated increase of $7000 per patent.

Although the SAWS program is now out in the open, it’s troubling that it was a secret for so many years. Many commentators have criticized the PTO’s lack of transparency. A paranoid mad scientist might wonder what other secret criteria are being used to delay patent applications.

Adam L. K. Philipp has been involved in the prosecution of patent applications in the computer science, electrical devices, consumer products and related fields since 1998 and with Internet and technology related law since 1995. He also counsels clients on intellectual property portfolio strategies and infringement matters.